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Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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Anthonia Ghalamkarizadeh
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TDI goes to the Court of Justice: the grounds of appeal
Class 46, thanks to Laetitia, reported back in July on the unsuccessful appeal by Audi and Volkswagen against the refusal of an Board of Appeal to allow registration as a Community trade mark of the letters 'TDI' in respect of "vehicles and constructive parts thereof". This ruling is now the subject of an appeal to the Court of Justice of the European Union, where it has been renumbered Case C-467/11 P.  The grounds of appeal are as follows:

1. The judgment under appeal infringes Article 7(1)(c) of the Regulation on the Community trade mark ('Regulation No 207/2009') as substantive Community law was applied incorrectly. The sign TDI is not descriptive. The General Court incorrectly proceeded on the basis that the public concerned would immediately and without further thought assume that the sign TDI is an abbreviation of a technical characteristic. That is incorrect as TDI is, on the one hand, not an abbreviation and there is, on the other hand, a multitude of expansions for such an abbreviation. Therefore the requirement of understanding 'immediately and without further thought' is not fulfilled. Furthermore, the appellants take the view that there is infringement of the principle in the first part of the first sentence of Article 76(1) of Regulation No 207/2009, which provides that OHIM is to examine the facts of its own motion, as OHIM neglected to prove that an absolute ground for refusal exists. 

2. In addition, there is infringement of the principle of equal treatment as there is a direct and specific relationship between the sign TDI and the registered signs CDI and HDI which demands that they be treated equally. No such equal treatment exists here as TDI is not registered. 

3. The judgment under appeal also infringes Article 7(3) of Regulation No 207/2009 because, on the one hand, evidence that the mark has been accepted throughout the Community is not required and, on the other hand, the General Court erred in law in its assessment of the underlying facts. Evidence is not required because the case-law of the Court in Pago in respect of Article 9 of Regulation No 207/2009 is applicable to Article 7 of that regulation. Over and above that, relevant evidence of the acceptance of the mark was adduced, in the assessment of which the General Court erred in law. In particular, the General Court failed to appreciate the evidential value of national registrations. In addition, the General Court did not take into account the large market shares and high sales figures in respect of TDI vehicles and it therefore overlooked the associated advertising effect in its legal assessment. 

4. Lastly, the General Court erred in law by stating that the sign TDI is not used as a mark. That is incorrect and infringes Community law as the sign TDI is used as a mark in every form of use.

The applicants have fought for a long time to obtain registration of the letters TDI and we can expect an interesting decision from the Court of Justice in the fullness of time.
Posted by: Blog Administrator @ 18.06
Tags: Community trade mark, TDI appeal,
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